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Implications of Refusal of Divisional Applications on Patent Disputes

The case of Novartis v/s. Natco regarding Indian Patent IN 276026 brings to light the complex legal dynamics surrounding divisional patent applications and their impact on patent disputes. At the heart of the matter lies the question of whether the mere refusal of a divisional application can extinguish the underlying patent. This article aims to delve into the legal nuances of this issue based on the findings of Justice Hari Shankar of the Delhi High Court.

Indian Patent IN 276026, titled Novel Pyrimidine Compounds and Compositions as Protein Kinase Inhibitors, is the subject of a patent infringement suit between Novartis and Natco. The suit patent claims a compound known as Ceritinib. Following a judgment on January 9, 2023, the Delhi High Court granted an interim injunction restraining Natco from exploiting the suit patent pending the suit's disposal.

The crux of Natco's argument for seeking vacation of the interim injunction lies in Novartis's filing of a divisional application, IN 5338/DELNP/2014, concerning some claims in the suit patent. Novartis filed this divisional application on July 26, 2014. However, Novartis later chose not to pursue the application, leading to its refusal by the Controller of Patents under section 15 on February 16, 2023.

Effect of Divisional Application Refusal:
The Hon'ble Court emphasized that the rejection of Novartis's divisional application was not based on its merits but rather on Novartis's decision not to pursue it further. This crucial distinction underscores the principle that a mere refusal of a divisional application does not extinguish the underlying patent.

Non-binding Nature of Controller's Decision:
The court clarified that the decision of the Controller of Patents regarding the divisional application is not binding on the court. Instead, the court independently evaluates the merits of the suit patent, especially concerning its vulnerability to invalidity under section 64 of the Patent Act.

Revisitation of Injunction Order:
The Hon'ble Court outlined the circumstances under which the court may revisit an injunction order. According to the second proviso to 039R4, such revisitation is warranted only if there is a change in circumstances or if the injunction causes hardship to the defendant. In this case, neither condition was met.

Suppression of Facts:
The court highlighted that revisiting the interim injunction order on grounds of suppression of facts is contingent upon whether the disclosure could alter the case's outcome. Since the refusal of the divisional application does not invalidate the suit patent, Natco's argument based on suppression of facts was deemed untenable.

Thus case of Novartis Vs. Natco underscores the importance of understanding the legal implications of divisional patent applications in patent disputes. The findings of Hon'ble Court provide clarity on the non-extinguishing effect of a divisional application refusal on the underlying patent. This case serves as a precedent for future disputes involving divisional applications and underscores the judiciary's role in independently evaluating patent validity irrespective of administrative decisions.

Case Title: Novartis AG Vs Natco Pharma Limited Judgment/Order Date: 09.04.2024
Case No: CS Comm 229 of 2019
Neutral Citation:2024:DHC:2640
Name of Court: Delhi High Court
Name of Hon'ble Judge: C Hari Shankar H.J.

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539

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